January 11, 2022

U.S. Patent Office Introduces Deferred Subject Matter Eligibility Response Pilot Program

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

The U.S. Patent and Trademark Office (USPTO) has introduced its Deferred Subject Matter Eligibility Response Pilot Program, which will evaluate the effects of permitting applicants to defer responding to subject matter eligibility rejections.

Under the pilot program, applicants may receive invitations to participate if their applications meet certain criteria, including 1) the application being assigned to a participating examiner, 2) the application meeting certain procedural criteria, such as being an original nonprovisional utility application, and 3) the claims raise both subject matter eligibility issues and non-subject matter eligibility issues that necessitate initial rejections.

If an applicant accepts the invitation to participate in the pilot program, the applicant must still file a reply to every USPTO action but is permitted to defer responding to subject matter eligibility rejections until "the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections."

This is in response to a request from Sens. Thom Tillis (R-N.C.) and Tom Cotton (R-Ark.), who asked that the USPTO adopt a pilot program under which full prosecution of subject matter eligibility issues under Section 101 is deferred until a patent application satisfies the other patentability conditions. They argue that this program will help the USPTO determine whether this approach is more effective and produces "higher quality patents" than the traditional "compact prosecution approach."

Invitations to participate in the pilot program will be mailed beginning Feb. 1, 2022, and ending July 30, 2022, with the potential for extensions or early termination depending on the workload and resources to administer the pilot program. Read more about the pilot program here.

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